WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Privacy Protection Service, Communigal Communication Ltd / Milen Radumilo
Case No. D2015-2290
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati – Studio Legale, Italy.
The Respondent is Privacy Protection Service, Communigal Communication Ltd of Netanya, Israel / Milen Radumilo of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <intesasanoaolo.com> is registered with !#No1Registrar, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2015, the Center retransmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 30, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 30, 2015.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Complaint Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Complaint Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Complaint Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on February 3, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a leading international banking group with headquarters in Italy. It was formed in 2007 through a merger between two large Italian banking groups, Banca Intesa S.p.A and Sanpaolo IMI S.p.A. The Complainant is well known in the international banking arena, particularly in relation to corporate and investment banking, and offers its services to approximately 11.1 million customers in 28 countries.
The Complainant is the owner of numerous trade marks for INTESA SANPAOLO including the following;
- Community Trade Mark No. 5301999 for the word mark INTESA SANPAOLO, in classes 35, 26 and 38, registered on June 18, 2007;
- Community Trade Mark No. 5421177 for the word and device mark INTESA SANPAOLO, in classes 9, 16, 35, 36, 38, 41 and 42, registered on November 5, 2007;
- Israeli Trade Mark No. 199601 for the word mark INTESA SANPAOLO, in class 35, registered on March 8, 2009.
The Complainant is also the owner of a large number of domain names including <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info> and <intesasanpaolo.com> all of which direct Internet users to the Complainant’s official website.
The disputed domain name was registered on July 16, 2015. Privacy Protection Service is shown on the WhoIs register as the registrant for the disputed domain name. The Registrar has disclosed the underlying registrant behind the privacy service as Milen Radumilo of Bucharest, Romania. The website to which the disputed domain name pointed, as at December 2015, comprised a holding page containing links to a variety of goods and services including “Microsoft email server” and “Deutsche Bank conto corrente” (that is, “Deutsche Bank bank account”).
5. Parties’ Contentions
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trade marks
The Complainant has provided a brief summary of its history and its commercial activities in the banking sphere, including its large scale banking activities in Italy, Eastern Europe and the Mediterranean following its formation as a result of merger in 2007. The Complainant asserts that the size and extent of its international activities since the merger, coupled with its large portfolio of registered trade marks, including those referenced above, gives it a worldwide reputation in the name “Intesa Sanpaolo”.
The Complainant contends that the disputed domain name is identical or confusingly similar to its INTESA SANPAOLO trade marks. The Complainant states that the disputed domain name exactly reproduces its trade mark for INTESA SANPAOLO with only a minor variation (replacing the “p” in “SANPAOLO” with an “o”). It says that this deliberate misspelling constitutes typosquatting by the Respondent. The Complainant refers to the decision in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 in which the panel found that a slight alphabetical variation in the spelling of a domain name, particularly where the language used is likely to be different from the Internet user’s own language (and therefore is more likely to be misspelled) can be held to be confusingly similar. The Complainant says that similar facts are applicable in this proceeding.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant states that the Respondent has never been authorized or licensed by it or by any of its affiliates to use the disputed domain name. The Complainant points out that the disputed domain name does not correspond to the name of the Respondent nor, so far as the Complainant has been able to ascertain, to any name by which the Respondent has been commonly known.
Furthermore, the Complainant draws attention to the use of the website to which the disputed domain name, resolves which appears to contain links to third-party advertisements and sponsored links to websites unconnected with the Complainant. The Complainant asserts that such use is neither fair nor noncommercial and does not give rise to any legitimate interests in the disputed domain name on the part of the Respondent.
(iii) The disputed domain name was registered and is being used in bad faith
The Complainant contends that its INTESA SANPAOLO trade mark is distinctive and well known internationally and that the high degree of similarity between this trade mark and the disputed domain name indicates that the Respondent was aware of the Complainant and its extensive trade mark portfolio at the time of his registration of the disputed domain name. Additionally, the Complainant says that if the Respondent had carried out even a basic Google search for the words “Intesa Sanpaolo”, he would have immediately become aware of the existence of the Complainant. In summary, the Complainant believes that the disputed domain name would not have been registered by the Respondent, but for the existence of the Complainant’s trade marks and the goodwill associated with them.
The Complainant states that the use made by the Respondent of the disputed domain name is in bad faith, in the light of the fact that the website to which the disputed domain name resolves is not used for any bona fide offering of goods or services, but instead provides sponsored links to third party websites offering a variety of services including banking and financial services, such services being similar to those offered by the Complainant. It says that Internet users searching for it who accidentally find the Respondent’s website instead will be provided with links which will take them to the websites of the Complainant’s competitors and that the disputed domain name is accordingly being used intentionally to divert traffic away from the Complainant’s website.
The Complainant points to several previous panel decisions which have held that the registration and use of a domain name to drive traffic to competitor websites can be held to constitute bad faith registration and use for the purposes of the Policy. These include Edmunds.com v. Ult. Search Inc., WIPO Case No. D2001-1319 in which the panel said that “Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”. The Complainant says that the Respondent’s commercial motivation is evident from the fact that the links which appear at the website to which the disputed domain name points are sponsored links. It asserts that typosquatting activities of the type it says have been conducted by the Respondent are prevalent in the banking sector and it refers to other proceedings under the Policy in which it has been involved in circumstances which are analogous to the facts in this proceeding.
Lastly, the Complainant states that on September 28, 2015, legal representatives for the Complainant sent a cease and desist letter to the Respondent requesting the voluntary transfer of the disputed domain name. The Respondent did not reply to the cease and desist letter or comply with the request for transfer. The Complainant submits that this is further evidence that the registration and use of the disputed domain name is in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous trade marks for INTESA SANPAOLO. These include trade marks in the European Union and Israel as well as an international trade mark registration for INTESA SANPAOLO. It accordingly has rights in this trade mark.
The disputed domain name is substantially the same as INTESA SANPAOLO save that the “p” in “SANPAOLO” has been replaced by an “o”. Such a minor difference to the Complainant’s mark does not render the disputed domain name visually or phonetically distinctive from it.
Previous panel decisions have found that a domain name containing a common or obvious misspelling of a trade mark will usually be found to be confusingly similar to a trade mark where the misspelled trade mark comprises the dominant portion of the domain name. See for example, Express Scripts, Inc. v. Whois Privacy Protection Service, Inc./ Domaindeals, Domain Administrator, WIPO Case No. D2008-1302, which held that registrants of domain names which comprise insignificant modifications to well known trade marks, seek to take wrongful advantage of errors by users who type the misspelt variant into their web browser’s address bar and that this arises as a result of the confusing similarity between the domain name and the trade mark. As the Complainant has pointed out, the probability of Internet users mistyping or misspelling the Complainant’s domain name is increased where (as in the case here for Internet users who do not speak Italian) the trade mark includes foreign and unfamiliar words.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides non-exhaustive examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
None of these examples are applicable to the facts of this case. The use to which the disputed domain name has been put, namely to host a parking page in the form described above, is not a bona fide offering of goods and services. There is no evidence that the Respondent, Milen Radumilo or Privacy Protection Service has been commonly known by the name “Intesasanoaolo”. Moreover, the use to which the disputed domain name has been put does not constitute a legitimate noncommercial or fair use of it.
The Respondent has chosen not to submit a Response in which he could have challenged the Complainant’s assertions and sought to explain why he might have rights or legitimate interests in the disputed domain name. For this reason, there is no material before the Panel which could conceivably point towards a right or legitimate interest on the part of the Respondent in registering it.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
It is evident from the evidence and submissions of the Complainant that, as at the time of registration of the disputed domain name, the Complainant’s INTESA SANPAOLO trade mark was both established, having first been registered approximately 8 years previously, and very well known in the banking and financial services sector. It is also a distinctive trade mark and, as the Complainant says, would readily have been found through an Internet search engine. It is improbable that the disputed domain name would have been registered by the Respondent without an awareness of the Complainant and its trade marks. The fact that, very shortly after the Respondent registered the disputed domain name, it pointed to a website hosting pay-per-click links, some associated with the Complainant, clearly points to the Respondent having registered it for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website. Such conduct falls within the example of both bad faith registration and bad faith use set out at paragraph 4(b)(iv) of the Policy. The many earlier decisions under the UDRP cited by the Complainant support its contentions in this respect. By way of example, bad faith registration and use was found in Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 in which the panel said that “Respondent’s Ownership of a site which is a mis-spelling of Complainant’s britannica.com site and which Respondent used to hyperlink to a gambling site demonstrates Respondent’s bad faith registration and use of the britannnica.com domain name”.
The Panel accordingly finds that the disputed domain name was both registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <intesasanoaolo.com> be transferred to the Complainant.
Date: February, 17, 2016